1011 Drawings

Applicants filing under §44 must comply with the drawing requirements of 37 C.F.R. §§2.51 through 2.54. See TMEP §§807 et seq. regarding drawings.

1011.01 Substantially Exact Representation of Mark in Foreign Registration

The drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant." 37 C.F.R. §2.51(c); TMEP §807.12(b).

The "substantially exact representation" standard is construed narrowly. Only slight, inconsequential variations between the mark in the U.S. application and the mark shown in the foreign registration are permitted. In re Hacot-Colombier, 105 F.3d 616, 618, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995) ; United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988). For example, non-material informational matter such as net weight or contents may be deleted. Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration. In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525.

If the foreign registration shows a series of marks, the mark on the drawing in the U.S. application must be a substantially exact representation of one of the marks depicted in the foreign registration. See TMEP §1011.02 regarding only one mark per application.

The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country. United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d at 1483-84.

If the mark in the foreign registration is in standard characters, the mark in the U.S. application must also be in standard characters. If the foreign registration certificate does not indicate that the mark is in standard characters (or the legal equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the U.S. application. See TMEP §807.03(f) for further information. See also Appendix E, which lists countries that register marks in standard characters or the equivalent.

Likewise, if the mark in the foreign registration is in special form, the drawing of the mark in the U.S. application must appear in the same special form. If the mark in the foreign registration shows color, the applicant must submit a color photocopy of the foreign registration. All claims of color made in the foreign registration must also be made in the U.S. application. The applicant must also comply with all requirements for a color drawing of the mark. See 37 C.F.R. §2.52(b)(1) and TMEP §§807.07 et seq. regarding the requirements for claiming color.

If the foreign registration is not issued in color, the examining attorney may require evidence to establish that a colored mark in a U.S. application is a substantially exact representation of the mark in the foreign registration. For example, the examining attorney may require evidence of the foreign country’s procedure for designating color when the foreign registration does not reflect the colors shown in the U.S. application.

If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes a claim of color(s) as a feature of the mark. The applicant must either: (1) submit an affirmative statement that color is claimed as a feature of the mark in the foreign registration; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that the color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §807.07(b).

The mark on the drawing in the U.S. application may not be a translation or transliteration of the mark in the foreign registration.

If the U.S. application is based on both a foreign registration and use in commerce, the mark on the drawing in the U.S. application must not only be a substantially exact representation of the mark in the foreign registration, but also may not differ in a material way from the mark shown on the specimen(s) of record. See TMEP §§807.12(b), 807.14 et seq.

1011.02 One Mark Per Application

If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the United States. For example, some countries permit registration of several versions of a mark in a single application. In the United States, separate applications are required. The drawing in the U.S. application must show only one mark, which must be a substantially exact representation of one of the marks in the foreign registration. 37 C.F.R. §2.52; TMEP §§807.01, 807.12(b), 1011.01.

1011.03 Amendment of Drawing

Section 44 applicants often try to amend the mark in the U.S. application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration. Amendments to drawings in §44 applications are governed by 37 C.F.R. §2.72(c). An applicant cannot amend the drawing in the U.S. application to conform to the mark in the foreign registration if the amendment would result in a material alteration of the mark on the drawing submitted with the original application in the United States. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997); In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) . Thus, when a §44 applicant proposes to amend its drawing, the examining attorney must consider: (1) whether the proposed amendment of the drawing would result in a material alteration of the mark on the original drawing; and (2) whether the proposed amendment would result in a mark that is a substantially exact representation of the mark in the foreign registration. In In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995), the Trademark Trial and Appeal Board held that the mark "GRAN VINO MALAGA LARIOS" and design on the drawing originally filed with the U.S. application was not a substantially exact representation of the mark "VINO DE MALAGA LARIOS" with a similar design in the foreign registration; however, the Board found that amendment of the drawing to conform to the foreign registration was nota material alteration within the meaning of 37 C.F.R. §2.72. The Board noted that "[t]he material alteration test . . . is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to . . . amendment of the drawing . . . ." In re Larios S.A., 35 USPQ2d at 1217. See TMEP §§807.14 et seq. regarding material alteration.

1011.04 Drawings and Descriptions of Three-Dimensional and Non-Visual Marks

If the foreign application or registration depicts several views of a three-dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2), and submit an acceptable drawing that depicts a single rendition of the mark. See generally TMEP §§807 et seq. regarding drawings. In the alternative, the applicant may petition the Director, pursuant to 37 C.F.R. §2.146(a)(5), to waive the requirement and accept a drawing featuring multiple views of the mark. See TMEP Chapter 1700 regarding petitions to the Director.

In all such cases, the applicant must indicate that the mark is three-dimensional. 37 C.F.R. §2.52(b)(2); TMEP §807.10. If necessary to adequately depict the commercial impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken lines to show matter not claimed as part of the mark. For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must include a written description of the mark and explain the purpose of the broken lines, e.g., by indicating that the matter shown by the broken lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08.

With respect to sound, scent, and other non-visual marks, an applicant is not required to submit a drawing, but must submit a detailed description of the mark. TMEP §807.09. If the foreign registration includes a drawing, such as a musical staff depicting the notes of which a sound mark is comprised, the U.S. application need not include such a drawing. As the drawing of the mark must be a substantially exact representation of the mark in the foreign registration, and the description of the mark defines the mark sought to be registered in a non-visual mark, the description of the mark in the U.S. application must be substantially comparable to any description of the mark in the foreign application or registration. 37 C.F.R. §§2.51(c), 2.52(e).